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Are trademark payment notices always to be trusted?

Written by Dreyfus14/01/2022

Avis de paiementPrepare and prevent, don’t repair and prevent…This saying also applies to trademarks, since fraudulent payment notices are becoming more and more common nowadays.

 

How is this happening?

 

Dishonest private companies, scammers, approach trademark applicants directly to ask them to pay certain service fees or other payments that are in fact neither necessary nor legally required.

It is therefore crucial to be vigilant.

Since trademark registration and management are already time-consuming and expensive enough, it goes without saying that paying scammers for their so-called trademark services is unnecessary. You should be extra vigilant when enquiries about trademark procedures do not come directly from your usual counsel.

However, fraud is not always easy to detect and the imagination of fraudsters is endless.

For instance, some fraudsters approach trademark owners directly by e-mail and demand payment of certain expenses, fees or additional charges to obtain trademarks’ registration when these expenses are purely fictitious. The payment notices are often for trademark monitoring services, additional registration services or services related to trademark renewal.

The problem is that trademark owners are very often approached by a so-called official agency, company or institution and sometimes even a so-called public authority or government. They use the same official templates, signatures and stamps as these types of entities and they provide the exact data of the trademark application or registration in question. After all, this kind of information is relatively easy to find online.

 

Another issue is the cross-border nature of these scams.

It may happen that trademark owners receive a notice from a Russian, Indian or Chinese company. While it is perfectly possible that payment notices from foreign countries are made in good faith, it is always beneficial to carefully check the accuracy and legitimacy of such notices.

 

Here are our advices.

 

Firstly, we invite you to check the stage of the proceedings in which your trademark is located. Isn’t it strange to pay fees for the registration or renewal of a trademark if the time limit has not even started or has already expired?

We encourage you to be vigilant. Do not hesitate to ask us questions when you receive documents that do not come from Dreyfus. Indeed, it is always wise to contact your legal adviser before making a payment. Dreyfus is specialised in these matters and is fully aware of the applicable time limits, procedural steps and expenses.

There are also official offices and agencies that can be contacted in the event of a suspicious or misleading trademark notice. For instance, the United States Patent and Trademark Office (USPTO) can be contacted. Although this office does not have the legal authority to prevent companies from engaging in these types of fraudulent practices, the USPTO does assist in the fight against fraudulent trademark notices. The USPTO issues reports and works with the Department of Justice and the Federal Trade Commission. Trademark owners can always file complaints with the Federal Trade Commission. This commission has the power to investigate and even prosecute if, for example, a particular company commits fraudulent business practices on a large scale. Dreyfus can assist you in filing such complaints and prevent you from being entrapped.

Fraudulent trade mark notices are becoming increasingly common. It is important to be very vigilant, to check the applicable time limits, to contact your Trademark Attorney before making any payments. At Dreyfus, we work with trademark offices and official agencies, such as the USPTO, in case of trademark notices that are suspicious or appear to be misleading.

 

About this topic…

 

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The reputation of the trademark is not enough to prove typosquatting

Written by Dreyfus23/12/2021

Ordinateur brainstorm meeting applicationWhen you are the owner of a well-known trademark and you detect a domain name that is almost identical to it, and moreover on sale for a substantial amount of money, it is tempting to consider that it is a case of typosquatting. However, it is essential to pay attention to details.

The Valeo Group

 

The Valeo Group, which specializes in the design, production and distribution of automobile components, and its affiliate, Valeo Services, have experienced this, after filing a complaint against the <valoservices.com> domain name registered in 2018, which was offered for sale for EUR 2288.

The applicants were respectively registered in 1955 and 1987 and the name VALEO was adopted in 1980. Together they have 59 research centers and 191 production sites. They have received numerous awards for their products. They also own several word marks based on the “VALEO” sign, notably in France, the European Union, China and the United States, and also hold semi-figurative marks including the name “VALEO SERVICE”. Finally, they operate the domain names <valeo.com> and <valeoservice.com>.

The respondent, who answered the complaint, describes himself as an engineer based in the United States who has a large portfolio of generic domain names.

The respondent believes that there is no likelihood of confusion between the disputed name and the complainants’ trademarks. It explains that “valo” means “light” in Finnish and that a search on the sign “VALO” on Google or on trademark databases does not reveal any trademark including “VALEO”.

While these arguments, especially the second one, are interesting, they have no place in the analysis of the likelihood of confusion between a trademark and a domain name, which consists of a simple side-by-side analysis of the two names. Since the omission of the letter “E” can be perceived as a spelling mistake, the expert considers that there is indeed a similarity between the signs.

After this first step, the expert does not address the issue of the defendant’s rights or legitimate interest, but directly addresses the issue of bad faith. On this point, the applicants state that their trademarks are very well known and rely on decisions of the Chinese and European Trademark Union Offices as well as on old UDRP decisions.

The Respondent reiterates its arguments regarding the use of the Finnish language and its clearance searches. The respondent states that it has several domain names in a foreign language or containing the term “service”.

The panelist is skeptical about mixing Finnish and English in a domain name but considers the respondent’s research that shows that a query on “VALO” does not lead to the complainants and the fact that many companies around the world are named VALO or have adopted a name beginning with VALO. Therefore, the complaint is dismissed. However, the expert points out that it is always possible to turn to a more appropriate procedure. The Panel also rejects the Respondent’s request to characterize the complaint as a reverse domain name hijacking.

Thus, it is advisable to put oneself in the shoes of the reserving party to determine whether he could have had knowledge of the trademarks, in particular by taking into account his country of origin and the field of activity in which the trademark is renowned. In this respect, the expert notes that the car parts sector is relatively discreet.

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.

 

 

About this topic …

 

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How did Miley Cyrus manage to register her eponymous trademark despite the existence of the earlier Cyrus trademark?

Written by Dreyfus03/12/2021

Miley CyrusSome cases are interesting because of the judicial outcomes, others because of the reputation of the Parties in the proceedings, and others because they fall into both categories.

This is the case of the judgment rendered by the General Court of the European Union on June 16, 2021. This decision opposed the European Union Trademark Office (EUIPO) to the company of the famous singer and actress Miley Cyrus: Smiley Miley. The latter is challenging the decision rendered by the Office in the dispute between it and the company Trademarks Ltd.

The genesis of this procedure was the European Union trademark application, in the name of Smiley Miley, of the word mark MILEY CYRUS in classes 9, 16, 28 and 41.

Cyrus Trademarks Ltd. lodged an opposition against said application, on the basis of its earlier European Union “CYRUS” trademark No. 9176306, registered for goods in classes 9 and 20.

 

After the Opposition Division partially upheld the opposition because of the likelihood of confusion, Smiley Miley filed an appeal that the EUIPO rejected.

Indeed, the EUIPO considered that there was a likelihood of confusion in particular because the level of attention of the relevant public varied from medium to high, that, by all means, the goods and at stake were identical and similar, and that, visually and phonetically, the signs were relatively similar.

Were the signs distinctive, different and differentiable?

The key criterion for assessing the risk as a whole is the overall impression that the trademark produces.

The Board of Appeal first tried to analyze the value of a surname compared to a first name and concluded that a surname has a “higher intrinsic value”. Then, the Court considered that neither the first name Miley nor the surname Cyrus are common in the European Union, “including for the English-speaking public”.

Not surprisingly, the applicant denounced this reasoning. The Court of First Instance recalled that these principles cannot be applied automatically, as they are principles drawn from experience and not set in stone. That said, as the singer and actress enjoys real renown, the assessment of the distinctive character of her mark would be less Manichean than it would have been for a trademark based on the first and last names of a non-famous person. In this regard, the Court of First Instance agreed with the applicant, considering that none of the elements of the mark “MILEY CYRUS” was more dominant than the other.

Regarding visual and aural levels, the Tribunal deemed that the trademarks were similar despite their differences.

The delicate examination of the conceptual comparison of signs

The applicant assessed that, due to Miley Cyrus’s fame, the mark was distinct from the earlier trademark. The EUIPO considered that the name and surname of the singer had not become a symbol of a concept.

The Court of First Instance accepted that Miley Cyrus was a character known to the general public in the ordinary course of events (a finding the Board of Appeal did not challenge).

When the Court of First Instance assessed the conceptual meaning of “MILEY CYRUS”, using the Larousse definition of “concept”, its research showed that, given her fame, the singer had indeed become the symbol of a concept.

On the other hand, and insofar as the artist had never performed using her surname alone, even though it is not common, the Court concluded that the public would not necessarily perceive the term “Cyrus” as referring directly to Miley Cyrus.

The Court therefore concluded that the “earlier mark has no particular semantic meaning for the relevant public”. Moreover, insofar as the concepts of the two trademarks were quite different, this had the effect of blurring their visual and phonetic similarities.

The law established that to qualify a likelihood of confusion, there must be an identity or similarity of the signs and an identity or similarity of the goods and services designated. Here, the Court of First Instance’s reasonings allowed to discard the likelihood of confusion between the two marks; the star entered the European Union trademark registry under No.012807111.

 

This decision serves as a reminder that great conceptual differences between two trademarks can benefit an applicant. This case also adds to the list of cases where the fame of names has allowed visual and phonetic similarities of signs to be easily dismissed.

 

About this topic…

 

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Influencers: be careful not to promote counterfeit products!

Written by Dreyfus15/09/2021

influencersThe Internet has changed the way we do business. From now on, advertising agencies are no longer the only ones to promote their client’s products; influencers have become the privileged interlocutors of brands wishing to make their products successful. If this approach does not seem abnormal, legal actions are flourishing against these people, for trademark infringement.

In a recent case, “Petunia Products, Inc. V. Rodan & Fields, et al.”, the plaintiff Petunia Products (“Petunia”) filed a complaint against Rodan & Fields for infringement of its trademark “BROW BOOST”. The latter had hired the influencer Molly Sims in order to promote its “Brow Defining Boost” product. On August 6, 2021, Federal Judge Cormac J. Carney dismissed the influencer’s motion to dismiss the complaint of alleged trademark infringement, in particular, because the plaintiff had succeeded in demonstrating that the promotion of the contested product could mislead consumers and create a likelihood of confusion between the prior trademark and the defendant’s product.

In particular, the judge argued that the Federal Trade Commission (FTC) declared that influencers and celebrities could be held liable for false or, at the very least, misleading advertising. Judge Carney drew a parallel with the case at stake and considered that every statement made by an influencer could amount to liability. Besides, and this is the main point of the first decision in this case, the judge took into consideration the risk of confusion, keystone of any claim for trademark infringement. In this case, this risk was genuine since the products were in direct competition with each other, from two competing companies operating on the same market, with a very similar name.

However, this decision must be balanced insofar as Judge Carney only ruled on the motion to dismiss filed by the influencer.

 

Concept and role of the influencer

It is necessary to understand the legal definition of “influencer”. In the opinion in Maximian Schrems v. Facebook Ireland Limited, Advocate General Bobek defines influencers as “everyday, ordinary internet users who accumulate a relatively large following on blogs and social media (…)”.

The French Authority of professional regulation of advertisement (ARPP) defines an influencer as “an individual expressing a point of view or giving advice in a specific field (…)”. It adds: “an influencer can act in a purely editorial framework or collaboration with a brand for the publication of content (product placement, (…), distribution of advertising content, etc.)” (free translation).

The influencer, therefore, has the power to direct the choices of the people following him/her, which is all the easier as the social networks on which they act are increasingly simple of use and accessible to the greatest number. Because of this ease of use, two American influencers, Kelly Fitzpatrick and Sabrina Kelly-Krejci promoted counterfeit products on Instagram and TikTok for sale on the Amazon platform. Amazon, therefore, filed a lawsuit on November 12, 2020 against the two women for fraudulent promotion of counterfeit products.

 

What is the influencer’s responsibility?

First of all, and Judge Conrey noted this in his decision, the influencer must state on the publication that the promotion of the brand results from a collaboration with the latter.

In France, this is also a recommendation of the French Professional Advertising Regulation Authority but most of all a legal obligation, which the French law for confidence in the digital economy (LCEN) of 2004 had already formulated. If the influencer can escape the net and not be found guilty of trademark infringement within the framework of a collaboration (that would be different if he/she promotes an infringing product directly), he/she could, be found liable of parasitism, unfair competition or misleading commercial practice, all three of which are heavily sanctioned under Article 1240 of the French Civil Code.

However, it is noteworthy that the influencer bears the weight of his/her responsibility concerning the information he/she publishes! Therefore, if a plaintiff can prove that the influencer in question was fully aware that the product he/she was promoting infringes on a third party’s rights, then it is likely that a judge would find the influencer and the company that contacted said influencer guilty of trademark infringement, either jointly or individually. Again, the judge will also consider the extent to which the product advertised by the influencer could confuse the public mind.

 

Hence, being an influencer is not without risks, and the partnership agreement concluded with a company must be carefully examined beforehand. Analysing the environment is essential as well as the product to be promoted must not infringe upon the prior rights of a trademark, even more so a competitor.

Dreyfus is at your disposal to assist you in securing these projects.

 

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How does the departure of Lionel Messi from FC Barcelona demonstrate the influence of players on the Intellectual Property rights of soccer clubs?

Written by Dreyfus08/09/2021

lionel messi soccer Underlying the performance of athletes, soccer clubs are engaged in a big race to develop their respective trademarks. FC Barcelona, until now the second biggest soccer club trademark, now risks losing its place to the club Paris Saint-Germain (PSG) as a result of Lionel Messi’s departure.

Lionel Messi has recently made the news by announcing his departure from FC Barcelona after more than two decades with the club.

This unexpected announcement is mainly due to the financial difficulties faced by FC Barcelona who are unable to take on the costs of the new contract agreed with the footballer two weeks ago..

This departure may not only impact the club’s quality of play but also its finances and especially its Intellectual Property rights.

 

 

A probable significant decrease in the value of the FC Barcelona brand

 

Brand Finance, in an article of 6 August 2021, estimated that the departure of Lionel Messi could cause an 11% decrease in the value of the club. This departure would cause a loss of €137 million. According to Brand Finance estimates. FC Barcelona has been, until now, one of the three most valued brands among soccer clubs (behind Real Madrid and in front of Manchester United). This news may well change the ranking.

Lionel Messi’s departure is even more impactful as he is considered one of the greatest players in the history of soccer. FC Barcelona’s image is therefore strongly impacted.

 

An opportunity for Lionel Messi’s new club.

 

On the other hand, the recruitment of the footballer by PSG is a real boon for the club which could see the value of its brand increase considerably. According to Brand Directory, the PSG brand is currently worth €887 million and ranks 7th among the most important soccer club brands.

The influence of players on intellectual property rights is such that some player brands even rival the value of some clubs’ rights. Messi has the most registered trademarks of all footballers. He has 115 trademarks, compared to 60 for Neymar, 53 for Cristiano Ronaldo and 46 for Paul Pogba. His trademarks are registered in various countries around the world, but mainly in Argentina, his country of origin. They are mainly registered in class 25 (Clothing), 28 (Games, sporting goods, toys) and 9 (Computer programs).

This trademark portfolio, owned by the footballer, is also an asset for the club that recruits him, as it increases its importance and influence.

So, PSG now holds two of the biggest players in terms of brand portfolio, Neymar and Lionel Messi, and could also be inclined to recruit Paul Pogba.

 

An impact on the new cryptocurrencies

 

As a result of PSG’s brand value, its cryptocurrency, “PSG Fan Tokens”, has grown considerably. The club made its mark by concluding the first player signing that included fan tokens. This news caused the cryptocurrency to rise by +100% in just three days.

As a result, the simple signing of Messi boosted the club’s PSG token capitalization to almost €144 million.

The PSG trademark is on track for considerable expansion, which can only reinforce the strength and interest of Intellectual Property rights in the world of soccer. Whether it’s the value of a club brand, the derivative products derived from it, or its cryptocurrencies, the composition of soccer teams considerably influences the pecuniary value of clubs.

We are a law firm with a unique expertise in the exploitation of intangible assets. We keep you updated on issues related to intellectual property and the digital economy through articles written by the Dreyfus legal team.

 

ABOUT THIS TOPIC…

 

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How are restaurants trademark portfolios evolving?

Written by Dreyfus02/08/2021

To protect a trademark and minimize the risk of potential legal action, restaurateurs should employ an ongoing research strategy, registration and monitoring.

 

What impact could the pandemic have on restaurant brand portfolios?

The pandemic has pushed restaurants to innovate. Delivery services, technological services, and even innovative uses of restaurant real estate are leading to an increase in trademark demands beyond traditional restaurant services.

Foodservice companies have expanded the use of “ghost kitchens” (also known as “dark kitchens” or “virtual kitchens”).

In ghost kitchens, chefs prepare food only for delivery or pickup without a seat for customers. A ghost kitchen can serve as a cooking space for multiple brands, allowing operators to expand their customer base without investing in a separate area for each brand.

The ghost kitchen concept also encourages experimentation because a brand can get started quickly with little additional cost.

The legal consequences arising from the different classes and descriptions of services requested by kitchens and brands continue to evolve. Regardless of what lies ahead, restaurants and related entities need to extensively think when filing for trademark protection and enforcing their rights.

The Covid-19 pandemic has put innovative pressure on the restaurant industry. As restaurants have changed or expanded their products and services since the start of 2020, their trademark portfolios have also expanded to include new classes of trademark registration.

How to effectively manage restaurants trademark portfolios?

In this context and after having created the name, the question of the company’s trademarks protection and international extension quickly arises, even for restaurants.

Today, there is a craze for trademark registration, which has a considerable impact on the strategy of their management by companies. It is increasingly complex to create a distinctive and solid brand or to maintain a monopoly on a word coveted by many.

In addition, legal risks have accelerated with e-commerce, market globalization and the company’s international exposure to the Internet.

As the demand for contactless food delivery grows, restaurants and related brands have adopted broad strategies, including partnering with ghost kitchens or selling food through temperature-controlled lockers.

At the same time, these new business areas have created an increased need to examine restaurant trademark portfolios and identify areas for which brands should be protected.

 

What precautions should you take to protect your IP rights?

It is of great importance to protecting your IP rights to take several precautions:

  • Ensure that you included confidentiality clauses in your contracts;
  • Provide for non-disclosure agreements;
  • Be vigilant on the terms of transfer of rights between the creator and the company.

 

It is necessary to establish a protection strategy in the real world and in the digital world to protect your trademark portfolio.

Why bet on the brand?

It is about obtaining an operating monopoly, which can be renewable indefinitely and will constitute the pillar in your marketing and commercial strategy.

It is necessary to register the trademark from the genesis of the project. Determine a limited but suitable territory is also of great necessity. Likewise, it is about thinking globally and digitally by protecting domain names when registering the trademark.

The domain name is an important asset!

Today, insurers identify the intellectual property of which domain names are a part as one of the top three risks facing businesses.

The domain name occupies a special place in that it serves as a vector for ever more sophisticated and varied frauds. Managing your trademark on the Internet is not just about filing and renewing but also building a strategy.

It is crucial to invest in protection and preventive defense strategy and also set up surveillance on your brand.

Finally, you must be particularly vigilant about the use that is made of your brand on the Internet to avoid any “bad buzz”, which would be particularly harmful to your reputation.

A restaurant’s brand portfolio is a true intellectual and economic investment that must be protected.

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed of the current issues of intellectual property and digital economy through articles written by the legal team of Dreyfus & associés.

 

 

ABOUT THIS TOPIC…

 

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Reverse domain name hijacking

Written by Dreyfus09/07/2021

domain name administrative processReverse domain name hijacking constitutes an abuse of procedure. On this topic, the WIPO issued on April 4, 2021 a decision reminding Complainants of their failings: it was their duty to proceed to relevant checks before initiating the complaint and to build their case properly. The examiner was all the more severe given that Complainants were represented by counsel.

The complaint in question was filed by three applicants.

 

 

First Complainant is an Indian company notably specializing in the manufacture and sale of sanitary products and kitchen appliances. First Complainant was originally known as Hindustan Twyfords, but later changed its name to HSIL Ltd. in 2009. Second Complainant, Somany Home Innovation Limited, was incorporated in 2017. It manufactures and sells, among other goods, air and water purifiers, water heaters, air coolers. Like Second Complainant, Third Complainant, Brilloca Ltd, results from the split of First Complainant.

Having detected the registration of the domain names <hsil.com> registered on November 16, 1999 and <shil.com> on December 9, 1999, Complainants filed a complaint with the WIPO Arbitration and Mediation Center to request the transfer of the domain names.

 

 

Respondent is a UK registered company, established on October 7, 1998, which provides web development services to help small businesses gain visibility on the Internet, initially focusing on the health club and leisure equipment market. In addition to the main site « health-club.net », Respondent has registered a number of short acronymic domain names.

First Complainant owns trademarks for the sign « HSIL », the first of which dates from 2004. Complainants further argue that Somany Home Innovation is widely known by the sign « SHIL », the acronym that corresponds to its corporate name.

 

 

First and foremost, the panelist notes that the applicants have not submitted any evidence showing the use of the sign « SHIL » to the point of making it a distinctive identifier for their benefit. Therefore, the latter considers that they are in default concerning the proof of likelihood of confusion between the <shil.com> domain name and an earlier trademark in which they potentially have rights. On the other hand, the likelihood of confusion was recognized for the name <hsil.com>.

 

 

Then, regarding the issue of legitimate interest and/or rights in the domain names, the panelist takes into account the fact that Respondent registered the disputed domain names in 1999, before the alleged filing and use of Complainants’ « HSIL » and « SHIL » marks. As opposed to Complainants, Respondent has provided evidence to support its claims that the names were used as acronyms for « Sports / Health in London » and « Health / Sports in London ».

Besides, the disputed domain names were registered in 1999, many years before the filing of the HSIL marks and the registration of domain names containing « HSIL ». In addition, the Complainants have no trademark rights for the sign « SHIL ».

Also, Respondent has demonstrated a use of the disputed domain names in connection to a bona fide offering of goods and services.

 

The complaint is therefore dismissed.

In addition, the panelist found that the complaint constituted reverse domain name hijacking, an attempt to obtain a domain name by artificially proving infringement.

Complainants, who are represented by counsel, should have anticipated the weakness of their argument and the fact that the acronyms « Hsil » and « Shil » could not refer exclusively to them, as alleged in the complaint without any evidence.

The panelist also notes that Complainants tried to make it look like trademarks were rejected in India because of the « well-known status and enormous goodwill » acquired by their earlier marks. This, despite the fact that the defendant has proven that third parties have been able to obtain registration of trademarks for the sign « SHIL » in India.

 

The panelist also targets Complainants’ representative and denounces an « unfamiliarity with the UDRP » and raises the fact that the latter has listed the registrar as respondent simply because it had allowed the registration of an available domain name, even though it is not in its power to decide whether or not to allow a registration.

 

Source: WIPO, Arbitration and Mediation Center, April 4, 2021, Case No. D2020-3416, HSIL Limited, Somany Home Innovation Limited v. SHIL Ltd, Brilloca Limited v. GOTW Hostmaster, Get on The Web Limited, India

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What are the challenges of zombie trademarks?

Written by Dreyfus15/06/2021

Propriété intellectuelle, marques The protection of intangible assets as well as the efficient management of zombie trademarks or patents  portfolio contribute to the proper development of a company and its business.

Building a reputation is the very goal of any brand. This reputation is normally attached in law to the sign and to the company that filed and operates it. However, in the context of zombie trademarks, the mark does not symbolize the reputation of the current owner but that of the original owner.

Indeed, these zombie trademarks are signs that have been abandoned but still have marketing potential, a reputation.

A zombie trademark presupposes an indisputable relinquishment, that is to say an abandonment both in fact and legally. It then falls into the public domain.

As long as a brand continues to be used and is renewed every ten years, it can exist perpetually, contrary to patents and the author’s economic rights. However, sometimes a company discontinues the use of some of these signs.

This abandonment can occur any time, whether while the filing is still under review or even when the sign has been in use for a long time. In terms of non-use, a sign is abandoned when a holder stops using it without the intention of resuming its operation, for five consecutive years according to Article L 714-5 of the French Code of Intellectual Property.

Although perpetually renewable, in practice the vast majority of brands have a limited lifespan. They are born and they die. However, it happens that some experience a different fate. They are resurrected.

 

As we can see with the zombie trademarks, abandonment doesn’t have to be permanent.

A company that has given up its rights to a trademark cannot normally prevent a newcomer from bringing a trademark “back from the dead”. Indeed, the disputed sign has returned to the public domain, which theoretically allows anyone to be able to dispose of it freely.

An abandoned trademark is in principle available to everyone.

In France, it is possible to take action against a so-called deceptive brand. Article L. 711-3 c) of the French Intellectual Property Code provides that signs “likely to deceive the public, in particular as to the nature, quality or geographical origin of the product or service” cannot be adopted as a trademark. The former owner also sometimes has the opportunity to initiate ​​unfair and parasitic competition claims.

Resurrecting a brand can thus be of major asset for a company wishing to take advantage of the notoriety of a distinctive sign that has returned to the public domain. However, some of these marks are not legally neither quite dead, nor quite alive, and it is advisable to be very careful, given that the case law is still rare and uncertain on this subject.

Dreyfus is experienced in anticipating, securing and optimizing IP portfolios, which ultimately adds value to our clients’ businesses.

 

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues with our articles written by  Dreyfus’ legal team.

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How to bring an action for invalidity or revocation of a trademark before the French Trademark Office INPI?

Written by Dreyfus07/06/2021

INPI, procedure, intellectual property, trademarks

On April 1, 2020, a new trademark action nullity or revocation procedure entered into force, with the PACTE law.

This law, transposing European Directive 2015/2436 commonly known as the “Trademark Package”, establishes a new administrative action for trademark invalidity before the National Institute of Intellectual Property (“INPI”).

 

 

Since April 2020, it is possible to bring an action for nullity or revocation of a trademark before the INPI, a competence so far reserved for the courts.

The INPI’s e-procedures portal now makes it possible to introduce trademark invalidity or revocation requests. These new provisions entered into force with the PACTE law on April 1, 2020.

The procedure is instructed at the INPI by a team of specialized lawyers. It potentially makes unused trademarks available for new actors to use them, and enables to remove invalid trademarks or trademarks contrary to public order.

Applications for nullity or revocation of a trademark are only made electronically through a simple and fast tool, including online help and a secure payment area.

This administrative procedure replaces the procedure for contesting a trademark in court, which remains possible in certain specific cases, such as for infringement actions.

 

 

Who can request the invalidity of the trademark?

 

In the past, it was necessary to justify an interest in taking action to request the invalidity of a trademark. This interest in acting could, moreover, be strictly assessed.

From now on, when the request is based on an absolute ground of nullity, it is no longer necessary to prove an interest in bringing proceedings.

Absolute grounds for nullity relate to the intrinsic value of the trademark. For example, if the trademark is descriptive of the products it designates (such as “white chocolate” for … white chocolate), then any person can request that it be void, without justifying any damage that would be specific to them.

 

 

What are the characteristics of the procedure?

 

The procedure for nullity or revocation of a trademark opened before the INPI is a written and exclusively electronic procedure, accessible via the INPI e-procedures portal.

This procedure is subject to the adversarial principle, allowing the parties to exchange and confront their arguments several times throughout the procedure. The duration of the procedure is therefore dependent on the will of the parties, up to three contradictory written exchanges can be organized.

Finally, said procedure allows the presentation of oral observations. This hearing, at the request of one of the parties or the INPI, is organized at the end of the written exchanges.

 

 

Can we appeal the decision?

 

The decision is subject to appeal before a court, the appeal being devolutive and suspensive.

The decision of the INPI, like a court decision, can be appealed to the Court of Appeal of the applicant’s domicile.

The Parties will have one month to file an appeal, by electronic means, upon notification of the INPI decision. Some mandatory information are required, otherwise the claim could be deemed  inadmissible.

This appeal has a suspensive but also a devolutive effect, which means that the judges will have the obligation to retry the case in its entirety.

During the appeal process, the Parties have three months to hand in their submissions together with all of their substantive claims.

If necessary, a cassation appeal may be lodged subsequently, by the director of the INPI or the Parties.

 

What is the current state of this new procedure?

 

This new procedure made it possible to reduce a disparity that existed between France and the European Union, since this option was already offered before the European trademark office EUIPO.

Saving time and money for those who introduce the action but at the same time more risk of seeing your brand attacked if it is vulnerable.

The INPI case law databases show that 131 decisions have since been issued on April 1, 2021 ruling on the revocation or maintenance of a mark and 55 on the invalidity of a mark. It takes about six and a half months for a decision to be rendered.

By its simplicity and speed, the new trademark invalidity action procedure before the INPI helps relieve the congestion in the courts. Thus, decisions can be rendered relatively quickly and above all, more actions will be taken thanks to the limited costs of an administrative procedure.

 

 

Benefit from the new nullity and revocation proceedings before the INPI (French Office), Dreyfus can help you!

 

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.

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How to protect store layout -Visual Merchandising with Intellectual Property law?

Written by Dreyfus28/05/2021

Trademarks, shop window, design, stores, intellectual propertyVisual Merchandising (VM) represents all store layout techniques. It is the art of implementing the identity dimension through scenarization of points of sale.

The term Visual Merchandising is born in the United States in the 1950s with the rise of art in business. Andy Warhol made the first storefronts in New York. After the years of the Depression, it was necessary to boost the economy with eye-catching storefronts.

The industry is branded, every brand is unique and represents your business in the market.

It is the art of implementing the identity dimension of a store through a scenarization of spaces. It is a true creation of the company which displays its own identity in its store.

Visual merchandising makes it possible to reconcile commercial efficiency, aesthetics and enhancement of the image of the brand in order to attract customers and retain them. There are different channels to seek legal protection of your investments in visual merchandising.

 

 

How to protect store layout -Visual Merchandising with copyright law?

 

Interior design is likely to be protected by copyright, provided that the criteria of form and originality are met! In the “Ladurée” case, the Paris Court of Appeal acknowledged the originality of the layout: “The elements and spaces created bore the imprint of the author’s personality and in the choice of style, colors and decoration the personality of the author was reflected”.

 

How to protect store layout -Visual Merchandising with trademark law?

 

To be protected, a trademark must be distinctive, lawful and available. Thus, the company Apple Inc was able to obtain the registration of its sales spaces as a three-dimensional trademark.

 

How to protect store layout -Visual Merchandising with unfair competition and free-riding ?

 

The main act of unfair competition potentially occurring in visual merchandising is confusion / imitation: causing, in the mind of the customer, an assimilation or a similarity between two companies or between their products and services.

In the Zadig Voltaire v. Bérénice case, the company Zadig France based its claim to protect the fittings of its stores on unfair competition.

Parasitism refers to “the set of behaviors by which an economic agent interferes in the wake of another in order to profit, without investing anything, whether its efforts or its know-how”.

 

What precautions should you take to protect your IP rights?

 

To protect your IP rights, it is paramount to take several precautions:

* Ensure that confidentiality clauses are included in your contracts;

* Provide for nondisclosure agreements;

* Be vigilant on the terms of transfer of rights between the creator and the company.

For example, the Court of appeal of Paris considered in the Petit Bateau case that the publication by an employee of photographs revealing the new collection of a clothing brand, even on a private Facebook account, constitutes a serious fault justifying the dismissal.

The Court ruled that the employee at the origin of the publication had committed the serious fault of having communicated to third parties confidential information, while its employment contract expressly provided for an obligation of non-disclosure.

In order to protect your Visual merchandising, it is necessary to establish a protection strategy in the real world and in the digital world.

 

Why bet on the trademark?

 

This way you obtain a monopoly, which can be renewable indefinitely and which will constitute the pillar in your marketing and sales strategy.

It is important to register the trademark from the genesis of the project. To that end, it will be necessary to determine a limited but suitable territory. Likewise, it is important to think globally and digitally, and to envision the protection of domain names when registering your trademark.

 

The domain name is an important asset!

 

Today, intellectual property of which domain names are a part is identified by insurers as one of the top three risks facing businesses.

Domain names in particular serve as vectors for ever more sophisticated and varied frauds. Managing your brand on the internet is not just about filing and renewing, but also building a strategy.

It is important not only to invest in a protection and preventive defense strategy but also to set up appropriate watch services for your brand.

Finally, you must be particularly vigilant about the use that is made of your brand on the Internet by avoiding “bad buzz” that is harmful to your reputation.

As a creation, Visual merchandising is a real intellectual and economic investment that is essential to protect.

 

 

Dreyfus & associés

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.

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